Intellectual Property Law

Second Circuit: Famous marks doctrine doesn't support NY unfair competition claim

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition.  The Second Circuit certified two questions to the New York Court of Appeals before resolving the issue.  With the answers back, the court affirmed the district court grant of summary judgment to the defendants in its entirety.

With the case now fully decided by the Second Circuit, the way is now clear for a possible appeal to the Supreme Court, as this case conflicts with the Ninth Circuit's 2004 decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., which recognized the "famous marks" doctrine rejected by the Second Circuit in this case.

More detail of ITC Ltd. v. Punchgini, Inc. after the jump.

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Full post as published by FileWrapper on March 05, 2008 (boomark / email).